The Thunder Down Under: Australia Veers from US on Obviousness

June 7th, 2008

It’s interesting how different countries define legal acts in different ways. Or maybe it’s just annoying. For example, how does it serve justice, common sense or clarity in the law to have a particular human act be a felony in one state, a misdemeanor in another, and totally legal in a third (think of the evolving law on medical uses of hemp). That could be explained by varying acceptance of social conduct between population groups. But what about more esoteric topics such as the definition of “contract?” After a few hundred years of jurisprudence, we may have finally gotten to a point where the basic elements of contract formation do not vary wildly between US states. But step outside the US or put goods into international commerce and now your US-executed contract may not be valid under the CISG (UN Convention on Contracts for the International Sale of Goods). Better race to the courthouse.

Thankfully, mercifully, decades of effort by international study groups, negotiators, ambassadors and legislatures have resolved all international variances in intellectual property law. Yes, in the early years of the 21st century, we can look with pride across a global expanse of harmonious and uniform application of patent, trademark and copyright laws.

And if you’re not laughing out loud, you should be. Why, take patent law. We can’t even get international accord on the definition of a patentable invention. For example, a good incorporating new technology sold once publicly in the US without the benefit of a pending patent application works a worldwide forfeiture of patent rights (for the vast majority of countries requiring absolute novelty). Maybe there’s a valid policy in pushing inventors to seek protection before commercialization. But go deeper on what an invention is.

To be patentable, an invention must be novel and non-obvious. Or, on the latter point, in different parlance, show an “inventive step.” On the issue of obviousness in the US, there are widely varying opinions on how different an invention must be from prior art to be a patentable invention (all employing multi-factor tests). KSR hardly settled the matter. More inventions are being attacked in the US on obviousness grounds than ever, suggesting greater uncertainty for all concerned.

So in an effort to get some distance from the maelstrom at home, we spoke with Neil Ireland, a patent attorney at the Phillips Ormonde & Fitzpatrick firm in Melbourne, Australia (www.pof.com.au). Maybe it’s having summer in December that keeps the Australians a little more flexible. But as Neil shares, their High Court is going in the opposite direction of the US Supreme Court and making it easier to show “inventive step” (non-obviousness). The High Court, in a widely discussed case, recently reaffirmed that an “inventive step” can be shown with a mere “scintilla” of invention. SeeLockwood Security Products Pty Ltd. v. Doric Products Pty Ltd. (High Court 2007), opinion at http://www.austlii.edu.au/au/cases/cth/high_ct/2007/21.html. Before you rush to file patent lawsuits in Australia, there is no presumption of patent validity. Once a patent goes into the Australian federal courts, it’s de novo review. So your patent will get a hard look no matter what. Listen carefully as Neil tells all. Then, we’ll be back shortly with the rest of the answer on international IP harmonization….

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Welcome to BP/G Radio, a talk show dedicated to intellectual property and the ever-changing world of patent, trademark and copyright law. Hosts Ernest Grumbles (G) of Adams Monahan LLP and Joe Bennett-Paris (BP) of Duane Morris broadcast from Minneapolis and Atlanta twice a month.